Ms. Shelley Zhang, a managing associate in Orrick's Beijing office, is a member of the Intellectual Property Group. Ms. Zhang's practice is focused on IP prosecution and enforcement. Ms. Zhang has extensive experience in patent, trademark, domain name, copyright and trade secret.
Ms. Zhang's related IP experience includes:
- Prosecution of patent and trademark, including application preparation, office actions/oppositions procedures and reexamination procedures.
- Enforcement and technology transfer/licensing arrangements for substantial patent and trademark portfolios for companies doing business in China.
- Patent invalidation proceedings, anti-counterfeiting, anti-piracy efforts and patent and trademark enforcement litigation in China.
- Section 337 U.S. International Trade Commission (ITC) litigation
- Advising on IP protection strategies, R&D related IP issues and trade secret issues.
- Assisting Chinese companies in Section 337 U.S. International Trade Commission litigation and IP due diligence and portfolio counseling.
Ms. Zhang's recent representative transactions have included assisting:
- Companies in mechanical, electronic and telecommunication fields on patent prosecution.
- A leading consumer product manufacture on enforcement of IP rights in China, involving administrative proceedings before the Chinese IP office, patent infringement litigation proceedings before court, administrative proceedings before Customs, and invalidation proceedings before the Patent Reexamination Board.
- A leading company in the field of providing engineer solutions on IP enforcement involving issues of breach of contract, unfair competition, patent, trademark and copyright infringement in China.
- Chinese companies in the laminated flooring industry in a U.S. ITC Section 337 case.
- A leading company in the field of semiconductor manufacture in a Chinese litigation and a relevant U.S. litigation, involving issues of breach of contract, patent infringement, trade secret misappropriation and unfair competition.
- A leading pharmaceutical company on analysis of issues involving administrative protection of pharmaceutical products and patent infringement in China.
- A leading company in the field of electrical transportation engineering on patent invalidation, evidence collection and evaluation, and strategy issues.
- A foreign investment company on due diligence of a Chinese company's IP assets.
- A multinational company on resolving trademark and domain names disputes in China.
- A leading e-commerce company on analysis of issues involving preliminary injunction and internet related infringement jurisdiction issues, cross-border technology license and assignment issues, R&D related issues including inventor compensation and ownership issues.
- Technology companies on R&D agreement and license agreement drafting and reviewing.
- A leading software solution provider on IP protection issues in China and giving a R&D related IP training to its R&D employees.
- A leading RFID card manufacture company on patent invalidation proceedings and unfair competition disputes.
- A leading electric device company on analysis of R&D related IP issues including determination of service or non-service invention, invention ownership, requirement of filing in China first, and patentability issue of invention-creations with minor modifications over prior art.
Prior to joining Orrick in 2007, Ms. Zhang worked for two international law firms, where she was involved in numerous IP prosecution and enforcement cases. Prior to those international law firms, she worked with local law firms as a Chinese lawyer practicing in civil and criminal litigation for two years and in trademark and patent prosecution for four years. Ms. Zhang also worked as an engineer in a state-owned enterprise for three years after her graduation from Beijing Institute of Technology in 1996.
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